Congress, Bayer, Orange, Sanrio: Intellectual Property

Dec. 6 (Bloomberg) -- The U.S. House of Representatives
passed legislation that technology companies say could reduce
the time they spend fighting some patent lawsuits.

The vote yesterday was 325-91, with 27 Republicans and 64
Democrats opposing the measure. The Senate has its own version
of the legislation, which it may take up early next year.

The vote “gives us a huge amount of momentum,” House
Judiciary Committee Chairman Bob Goodlatte, a Virginia
Republican who sponsored the bill, said in an interview.

The measure would place limits on entities that buy patents
in order to demand nuisance royalties from as many companies as
possible. Sometimes disparaged as “trolls,” such firms filed
19 percent of all patent lawsuits from 2007 to 2011, according
to the Government Accountability Office.

The measure is “a great step in the right direction,”
said Michael Beckerman, chief executive officer of the Internet
Association, whose members include Google Inc., Facebook Inc.
and Yahoo! Inc. “There are so many abuses in the system that it
needs to be addressed. It’s become an extortion game based on,
‘We know your legal costs are going to be high, so you’re going
to settle with us.’”

Senate Judiciary Chairman Patrick Leahy, a Vermont
Democrat, has introduced a different patent bill that may come
up for a vote in 2014. The House and Senate measures would have
to be merged before President Barack Obama could sign something
into law.

Leahy’s committee is set to hold a hearing Dec. 17.

Horacio Gutierrez, Microsoft Corp.’s head of intellectual
property, said the House legislation had “common-sense reforms
to curb abusive patent litigation.”

Critics including the Innovation Alliance, whose members
include Qualcomm Inc. and Dolby Laboratories Inc., said the
measure was pushed through the House too quickly.

The debate centered on ways to curb litigation abuses while
ensuring patent owners can protect their inventions from
knockoff competition or unauthorized use. Companies that are
routinely sued backed the bill while companies that generate
revenue by licensing their patents opposed it.

The legislation would require patent owners to provide more
information on their inventions and describe the infringement,
and limits the amount of pretrial information that can be sought
from accused patent violators.

The House bill is H.R. 3309. The Senate bill is S. 1720.

Damages Expert’s Testimony Excluded in Facebook Patent Case

In an infringement case brought against Facebook Inc. by a
patent owner, a federal judge in Virginia excluded testimony
about monetary damages by James E. Malackowski, chairman and
chief executive officer of Ocean Tomo LLC.

Ocean Tomo is the company that premiered live public patent
auctions. The Chicago-based company’s transactional division was
acquired by London’s ICAP Plc in 2009.

Malackowski was hired by Rembrandt Social Media LLP, which
sued Facebook in February, claiming that its patents 6,415,316
and 6,289,362 were infringed.

In a Dec. 30 order, U.S. District Judge T.S. Ellis III said
both Malackowski’s expert damages report and testimony were to
be excluded under a rule of federal court procedure and in light
of a 1993 U.S. Supreme Court case relating to the admissibility
of expert testimony.

Ellis said Malackowski had based his royalty base and rate
on non-infringing features of the Facebook website. The judge
ruled that the technology at issue represented only a small
improvement on Facebook’s existing technology, and Rembrandt was
entitled to a royalty based only on “the incremental value
provided by the improvement.”

The case is Rembrandt Social Media LP v. Facebook Inc., 13-cv-00158, U.S. District Court, Eastern District of Virginia
(Alexandria).

For more patent news, click here.

Trademark

Bayer’s Elevit Found Easily Confused With Eleviv, Newspaper Says

Bayer AG’s Bayer Healthcare persuaded the High Court of New
Zealand to overturn the registration of a trademark by DBC
Health New Zealand, the Fairfax New Zealand News reported.

The court said DBC’s registered trademarks for Eleviv, a
nutritional supplement, could potentially be confused with the
Elevit prenatal vitamin product, according to the News.

The court found the name similarity posed a potential risk
to pregnant women, as the DBC product featured a warning against
using the product when pregnant or breastfeeding, according to
the News.

Bayer’s Elevit was approved in New Zealand for sale
exclusively in pharmacies beginning in 2002, while Eleviv can be
sold anywhere in the country, according to the news website.

Orange Successfully Challenges South African ‘Orangeworks’ Mark

Orange SA, France’s largest telephone company, convinced a
South African court that permitting Account Works Software Ltd.
to use “Orangeworks” infringed its trademarks, ITWeb reported.

South Africa’s Supreme Court of Appeal ruled that consumers
would be confused if the software company was allowed to use
that name, according to ITWeb.

The court said that while “orange” is an ordinary English
word, it has no natural association with software, so Orange’s
registration of the term in South Africa to be used with
software made that mark distinctive, ITWeb reported.

Counsel for AccountWorks told ITWeb that anyone who uses
the word or color orange in the information and communications
technology area may be vulnerable to trademark claims by Orange.

Washington Clergy Send NFL a Letter Over ‘Redskins’ Mark

A group of 60 Washington clergy members sent a letter to
the National Football League and Washington Redskins owner
Daniel Snyder requesting that the team change its name.

The clergy said in the letter that the term “redskin”
offends American Indians and others in the U.S.

“This word, defined in the dictionary as a slur, should
not be publicly marketed and celebrated in America, which is
built on the ideals of respect and inclusion,” they said.

Among the signatories are Alton B. Pollard III, dean of the
Howard University School of Divinity; Keith Silver, president of
the Washington chapter of the Southern Christian Leadership
Conference; and Rabbi Michael Lerner, editor of Tikkun magazine.

The debate has also spawned attempts to cancel the team’s
U.S. trademark. Snyder, paid a record $800 million in 1999 for
the football club, has said repeatedly he won’t change the name.

Nepali Carpet Trade Group to Seek Name Registrations Abroad

The government of Nepal agreed to work with the Nepal
Carpet Exporters Association to develop and register trademarks
for carpets in the countries where they are sold, Nepal Republic
Media’s Republica website reported.

The success of the Chyangra Pashmina trademark for pashmina
woolen fabric inspired the Nepali carpet group to see to
register trademarks, according to Republica.

Anup Malla, president of the group, told Republica
trademarks will help establish Nepali carpets’ identity as high-quality products to compete with “low quality products from
Indian and China” that he said are flooding the market.

For more trademark news, click here.

Copyrights

Sanrio Sues Over ‘Hello Kitty’ Copyright in Los Angeles

Sanrio Co., the Japanese company known for its “Hello
Kitty” line of products, sued 13 defendants in U.S. court for
copyright infringement.

The defendants, 10 of whom are unnamed and three named, are
making and selling jewelry and other personal accessories that
are knockoffs of Hello Kitty designs, according to the complaint
filed Dec. 4 in federal court in Los Angeles. They made
“substantially identical likenesses” of the designs for the
Sanrio products and allegedly infringed the Japanese company’s
trademarks, Sanrio said.

The company is seeking court orders barring further
infringement, as well as the seizure and destruction of all
allegedly infringing products and promotional materials. Sanrio
also asked for money damages, litigation costs and attorney
fees, and requested that the damages award be tripled to punish
the defendants for their actions.

The case is Sanrio Inc. v. Blink & Blink Inc., 13-cv-008938, U.S. District Court, Central District of California
(Los Angeles).

For more copyright news, click here.

Trade Secrets/Industrial Espionage

WPP’s Dispute With TiVo Over Research Units Gets Dec. 20 Hearing

The remaining elements in the patent-infringement and trade
secrets case between U.K.-based WPP Plc’s Kantar market research
unit and TiVo Inc.’s TRA unit are the subjects of a Dec. 20
hearing in Manhattan federal court.

U.S. District Judge Shira Scheindlin last month dismissed
the patent and trade secrets claims in the case, which was filed
in June 2011. Kantar initially sought a declaration that it
didn’t infringe TRA’s 2010 patent 7,729,940, which covers a tool
for analyzing the return on investment of advertising campaigns
by matching multiple data sources.

Scheindlin said on Nov. 25 that Kantar didn’t infringe and
the claim that TRA’s patent was invalid was therefore moot. She
also ruled that TRA failed to produce evidence of protectable
trade secrets or that Kantar used them.

The remaining elements of the case involve allegations of
breach of contract and breach of fiduciary duty. Scheindlin said
that at the Dec. 20 hearing, the parties should be prepared to
discuss whether the remaining claims in the case should be
remanded to state court.

The case is TNS Media Research LLC v. TRA Global Inc., 11-cv-04039, U.S. District Court, Southern District of New York
(Manhattan).

IP Moves

Teresa Stanek Rea Returns to Crowell & Moring From USPTO

Crowell & Moring LLP said Teresa Stanek Rea, the former
acting and deputy director of the U.S. Patent and Trademark
Office, is coming back to the firm.

Rea, who was also acting and deputy undersecretary of
commerce for intellectual property, will work in the IP practice
group, the Washington-based firm said in a statement

She will serve as a director at the affiliated C&M
International Ltd., an international trade and investment
consulting firm.

Rea aided the patent office in the implementation of the
America Invents Act, writing regulations putting in place some
of the procedures mandated by the law. She also negotiated IP
issues with foreign officials.

Before she was a lawyer, Rea was a licensed pharmacist. She
has an undergraduate degree from the University of Michigan and
a law degree from Wayne State University.